Friday, February 17, 2017

The Board dismissed this opposition to registration of the mark shown below, for clothing and event services [ANTARCTIC ICE MARATHON & 100K and the geographic representation of Antarctica disclaimed], finding that, as to Opposer Marathon Tours' Section 2(d) claim, opposer failed to prove priority for its alleged mark ANTARCTICA MARATHON, and as to its fraud claim, opposer failed to prove, or even allege, an intent to deceive the USPTO. Marathon Tours, Inc. v. Richard Donovan, Opposition No. 91214916 (February 14, 2017) [not precedential].

Opposer Marathon Tours created and organized the Antarctica Marathon in 1995, held in the Shetland Islands. Due to environmental restrictions, only one or two hundred runners participated in any year. Revenues were about $1.3 million in 2007, and about $1.9 million in 2015. Unsolicited media coverage has been limited and sporadic.

Applicant Donovan has been organizing his event since 2006. His races occur in the interior of the Antarctic, and his event has been featured on American media.

Section 2(d) Priority: Marathon Tours relied on its alleged common law rights to prove priority. It therefore had to prove that its mark was distinctive, either inherently or via acquired distinctiveness, and that it had priority of use. The Board noted that opposer had applied to register ANTARCTICA MARATHON and had claimed acquired distinctiveness under Section 2(f). [The application was blocked by Mr. Donovan's application]. That was an admission by Marathon Tours that its alleged mark was not inherently distinctive.

As to acquired distinctiveness, the Board found ANTARCTICA MARATHON to be highly descriptive, and therefore opposer had a higher burden to show acquired distinctiveness. [Note: the Shetland Islands are not in Antarctica, but the Board declined to consider the misdescriptiveness issue].

Although Marathon Tours began offering the relevant services in 1995, the ANTARCTICA MARATHON race did not become a regular and annually-recurring event until 2008. Media recognition consisted of four media articles during the period 1995-2007, all before the race became an annual event. Applicant Donovan, on the other hand, began offering his race in 2006 and has been offering it annually and regularly ever since. It attracted unsolicited media attention from the git-go, and the attention has continued to the present at a scale that far outpaces the media attention for opposer's race.

The Board concluded that Marathon Tours had failed to show both that use of its mark is substantially exclusive and that the mark had acquired distinctiveness. Thus opposer cannot show priority, and its Section 2(d) claim must fail.

Fraud: Marathon Tours alleged that applicant Donovan never operated or conducted its marathon races "in commerce regulated by the United States," and he therefore made a knowingly false statement upon with the USPTO relied.

However, Marathon Tours failed to allege, nor did it offer any proof, that applicant's statements (even if false) were made with the intent to deceive the USPTO. [Applicant Donovan testified that he targets US customers and offers his services in the USA]. Therefore, opposer's fraud claim failed as well.

TTABlog comment: Looks like we have two entities using similar, descriptive marks for nearly the same services. Sounds like the recent CHICAGO STAGEHAND case. But at least there the stagehands were in Chicago.

1 Comments:

As noted in the blog post and the TTAB decision, the Board didn’t find it necessary to fully discuss the “geographically deceptively misdescriptive” factor. As the TTAB Blog Comment touches upon, the ANTARCTICA MARATHON mark ostensibly does not refer to a marathon held in Antarctica. This seems like a simple grounds on which to base this decision. Yet footnote 47 states that “there is insufficient evidence of misdescriptiveness, and we need not address the alternative claim.” While the Opposer’s marathon does not take place in Antarctica if it takes place in the Shetland Islands off of the coast of Scotland, the Board did note in the opinion that the ANTARCTICA MARATHON takes place on King George Island, which is one of the South Shetland Islands, which are on the Antarctic Peninsula. Although I have seen some webpages that claim they are not technically considered part of Antarctica (see, e.g. http://www.worldmarathonchallenge.com/html/7-continents/ “For the avoidance of doubt, the South Shetland Islands, including its northernmost King George Island, and the Falkland Islands are not considered part of the continent of Antarctica. These islands are not even located within the Antarctic Circle, they are not part of Antarctica's continental landmass, and they are not part of the Antarctica Tectonic Plate or geographic continental shelf.”), the Board did not address this issue any further.

In terms of the fraud claim, the Board found that Opposer failed to provide any evidence of intentional misrepresentation, let alone “prove it to the hilt.” Had Opposer presented evidence to support the fraud claim, I assume that because there is no evidence that Applicant solicited media attention, it is not enough to show that CNN and other American media sources covered the event to substantiate Applicant’s claim that he targets US consumers. But what about the fact that since 2006, 3 Americans won an event held by the applicant—Noelle Sheridan 2006: Women’s Marathon; Jason Wolfe 2009: Men’s Marathon; and Griff Griffith 2016: Men’s 100k; not to mention the many others who participated but did not win? Given that each participant spends approximately $10-15k, and many participants are American, would this have been enough to defend against the fraud claim, assuming Opposer had presented evidence to support it?

Something else this post made me think about—While the two marks in question here are undoubtedly similar in sight sound and meaning and refer to similar, if not identical, goods and services, I find one aspect of the likelihood of confusion element interesting in this case: The Applicant targets a highly sophisticated niche consumer group, all of whom spend upwards of $10k to run a race that fewer than 70 people run each year (see https://www.icemarathon.com/site/race-results/209.html), and the Opposer only has 200 “runners and supporters” attending its 2017 event (see http://www.marathontours.com/races/antarctica-marathon-and-half-386). While Opposer failed to prove priority of a distinctive mark, and therefore the Board did not spend time on this analysis, I wonder if a survey of the target consumers would show any likelihood of confusion between the two parties’ services. The target consumers’ high levels of sophistication and their commitment of significant amounts of time and money to participate in the events leads me to think confusion is highly unlikely; people who run marathons in these types of extreme conditions are quite possibly among the most sophisticated consumer groups I can think of.